FEDERAL COURT OF AUSTRALIA CaesarStone Sdot-Yam Ltd v Ceramiche Caesar S.p.A. [2017] FCA 326 File numbers: NSD 166 of 2015 NSD 1187 of 2015 NSD 1719 of 2015 Judge: ROBERTSON J Date of judgment: 28 March 2017 Catchwords: PRACTICE AND PROCEDURE – late service of three affidavits – interlocutory application for leave to rely on those affidavits – whether those affidavits of limited probative value – whether explanation for the delay – whether prejudice to other party Legislation: Federal Court of Australia Act 1976 (Cth) s 37M Trade Marks Act 1995 (Cth) ss 56, 88 Date of hearing: 28 March 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 16 Counsel for CaesarStone Sdot-Yam Ltd: Mr T Cordiner SC with Ms R White Solicitor for CaesarStone Sdot-Yam Ltd: K&L Gates Counsel for the Ceramiche Caesar S.p.A.: Mr C Burgess with Ms E Whitby Solicitor for Ceramiche Caesar S.p.A.: Spruson & Ferguson ORDERS NSD 166 of 2015 BETWEEN: CAESARSTONE SDOT-YAM LTD Applicant AND: CERAMICHE CAESAR S.p.A. Respondent NSD 1187 of 2015 BETWEEN: CAESARSTONE SDOT-YAM LTD Applicant AND: CERAMICHE CAESAR S.p.A. Respondent NSD 1719 of 2015 BETWEEN: CERAMICHE CAESAR S.p.A Applicant AND: CAESARSTONE SDOT-YAM LTD Respondent JUDGE: ROBERTSON J DATE OF ORDER: 28 MARCH 2017 THE COURT ORDERS THAT: 1. Ceramiche Caesar S.p.A have leave to rely on the following affidavits: (a) the affidavit of Mark Ryan affirmed 6 January 2017; (b) the affidavit of Gian Battista Malavasi affirmed 25 January 2017; and (c) the affidavit of Jacqueline Chelebian sworn 23 January 2017 2. Ceramiche Caesar S.p.A pay CaesarStone Sdot-Yam Ltd's costs of Ceramiche Caesar S.p.A's interlocutory application dated 17 February 2017. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROBERTSON J: 1 These proceedings, set down for seven days beginning yesterday, concern two appeals under s 56 the Trade Marks Act 1995 (Cth) from decisions of the Registrar of Trade Marks to reject CaesarStone Sdot-Yam Ltd's (CaesarStone) application to register two trademarks and an application for rectification brought by Ceramiche Caesar S.p.A (Ceramiche Caesar) under s 88 to revoke CaesarStone's trade mark registration for the word mark CAESARSTONE in respect of certain services in class 35 and class 37. 2 These reasons deal with an interlocutory application on the part of Ceramiche Caesar filed on 17 February 2017 for leave to rely on three affidavits: the affidavit of Mark Ryan affirmed on 6 January 2017; the affidavit of Gian Battista Malavasi affirmed on 25 January 2017; and the affidavit of Jacqueline Chelebian sworn on 23 January 2017 (the three affidavits). 3 The reason for the application is that the three affidavits were filed late. 4 I made a number of directions, six sets, requiring Ceramiche Caesar to file its affidavits and that company had been given several extensions. The three affidavits were filed some four months after the date by which they should have been filed, that date being 9 September 2016. 5 These reasons do not deal with a number of specific objections to the three affidavits. 6 The interlocutory application for leave to rely on the three affidavits was opposed. 7 The application was supported by an affidavit sworn 17 February 2017 by Mr Khajaque Kortian, the solicitor responsible for the conduct of the proceedings on behalf of Ceramiche Caesar. That affidavit was read without objection. 8 Although one of the submissions made by counsel for CaesarStone in opposition to the interlocutory application was as to the relevance or weight of the material if admitted, I would not dismiss the interlocutory application on this ground as it is not clear to me at this early stage of the trial what probative value the material might have. For example, one of the objections on the ground of limited probative value was to evidence sought to be adduced in the affidavit of Ms Chelebian as to a publication called Tile Today. It was said that there was no evidence that anybody read it, but the evidence given this morning by Ms Hannah, after the objection was made before I had ruled on it, shows that that is a contestable question. 9 Further, Mr Kortian deposed that the affidavits of Mr Ryan and Mr Malavasi deposed to the distribution by Ceramiche Caesar of the annual general catalogues in Australia in the period between 1996 and 2007. Those affidavits also addressed the promotion and sale by Ceramiche Caesar of its tile products in Australia and overseas. Ms Chelebian's affidavit sought to prove that the Ceramiche CÆSAR (Device) trade mark and the CÆSAR word trade mark were used and promoted in the Australian magazine Tile Today between 1997 and 2007. This gives the three affidavits sufficient relevance that I would not dismiss the interlocutory application on that ground. 10 The late service of affidavits is to be deprecated. This is particularly so where there have been, as there have been in this case, numerous case management hearings. But case management is not an end in itself: it is, as stated in s 37M of the Federal Court of Australia Act 1976 (Cth) with respect to the civil practice and procedure provisions, to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible. In my opinion, the real issues for present purposes are, first, any explanation for the delay and, second, any prejudice to CaesarStone. 11 As to the explanation for the delay there is evidence from Mr Kortian. 12 Paragraphs 18 to 22 of that affidavit refer to Mr Malavasi not confirming his willingness to swear an affidavit in the proceeding until 23 January 2017 and other specified hindrances to the preparation of his affidavit in draft. As to Mr Ryan's affidavit, Mr Kortian deposed to no decision having been made necessarily to rely on an affidavit by Mr Ryan before the end of December 2016. As to the documents annexed to Ms Chelebian's affidavit, although the documents annexed to it were obtained in the period between July to November 2016, no decision was made necessarily to rely on those documents until the completion of the other further evidence already referred to. 13 Mr Kortian's evidence was subject to some cogent criticism by counsel for CaesarStone who submitted that, amongst other things, the material did not demonstrate why Ceramiche Caesar failed to approach the Court earlier. I note in this respect that at a case management hearing on 16 February 2017 I indicated that any application filed by Ceramiche Caesar to rely on its further evidence would be dealt with at the trial. 14 As to prejudice, there is no evidence on the part of CaesarStone that it would be prejudiced. Counsel for CaesarStone did not submit that the course of the trial would be prejudiced, for example by an inability to deal with the putative new material either at all or within the time set aside for the hearing. It was not put that counsel for CaesarStone would not be able to cross-examine the deponents. Ms Chelebian is not required for cross-examination. I note that subpoenas to attend have issued, arrangements for evidence by video link have been made and time has been set aside for the two witnesses required for cross-examination to be cross-examined. No other specific prejudice was pointed to in submissions on behalf of CaesarStone, for example that the affidavits were so long and complex that it would not be possible to deal with them in the course of the trial. This would have been a difficult submission to sustain given that, according to the undisputed chronology of events, the three affidavits were served on 25 January 2017, some two months ago. 15 I have taken into account that neither the date nor the length of the final hearing, on which the Court is presently embarked, will be prejudiced by the admission of these three late affidavits. I have also taken into account that the three affidavits are not lengthy and appear not to be broad in scope or complex in subject matter. 16 In my opinion the appropriate order is to grant the relief sought in the interlocutory application but I will hear the parties as to costs. My provisional view is that because Ceramiche Caesar is asking for an indulgence it should be ordered to pay CaesarStone's costs of the interlocutory application. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate: Dated: 29 March 2017